Ex Parte Skog

Patent Trial and Appeal Board

Jun 10, 2014

11571635 (P.T.A.B. Jun. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT SKOG
____________

Appeal 2012-000696
Application 11/571,635
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 11-42. Claims 1-10 were previously cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellant’s claimed invention is a method for “controlling quality of
service requests for transmissions relating to a packet data service.” (Spec. l,
ll. 16-19). Independent claim 11, reproduced below with contested
limitations emphasized, is representative of the subject matter on appeal:
11. A method in a mobile communication terminal
comprising an application for receiving at least one packet data
service from a service provider said method comprising the
steps of:

the application receiving a pushed service indicating
message from a push proxy gateway of the service provider,
said service indicating message including information that the
service provider has a service content to deliver to the terminal,

retrieving a set of recommended quality of service
parameters that is included in the received service indicating
message, said set of recommended quality of service parameters
including a set of quality of service parameters within a bearer
that the service provider recommends that the terminal requests
for a bearer of the bearer service for reception of the service
content;

processing the set of recommended quality of service
parameters to determine a set of processed quality of service
parameters based on said set of processed, recommended
quality of service parameters; and

the application initiating setup of a bearer service for
reception of said service content requesting the set of processed
quality of service parameters for the bearer of the bearer
service.

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REJECTIONS
A. Claims 11, 12, 14, 15, 19-22, 24, 25, 29, 30, 32-34, 36, 37, and 41
stand rejected under 35 U.S.C. § 102(b) as being anticipated by PCT
Patent Publication No. WO 01/33782 A1 (Aho, published May 10,
2001).
B. Claims 13, 16, 23, 26, 35, and 38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Aho and U.S. Patent No. 7,327,724 B2 (Muhonen,
priority date May 22, 2001).

C. Claims 17, 27, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Aho and “WAP WAE Specification” (WAP, Version 24 May 1999).

D. Claims 18, 28, 31, 40, and 42 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
Aho and U.S. Patent No. 7,209,458 B2 (Ahvonen, priority date Sept.
27, 2002).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of anticipation
rejection A on the basis of representative claim 11. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).1 We address § 103 rejections B, C, and D
separately, infra.

1 Appellant filed a Notice of Appeal on April 14, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
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Rejection A - Independent Claim 11
Issue: Under § 102, did the Examiner err in finding Aho discloses the
contested limitations of representative claim 11? In particular, is the
Examiner’s interpretation of the claim terms “quality of service parameters”
and “recommended quality of service parameters” overly broad,
unreasonable, or inconsistent with the Appellant’s Specification?
The issue in this appeal turns on claim construction. For the reasons
discussed below, we are not persuaded of error regarding the Examiner’s
broader interpretation of the contested claim terms.
Regarding the claim term “quality of service parameters,” Appellant
contends to be “unaware of any plain meaning of ‘quality of service’
parameters that would include size, type, originating address, and/or
importance of a message.” (Reply Br. 2).
In support of the rejection, the Examiner explains how the claim term
“quality of service parameters” is being interpreted:
The notification message of Aho contains information on
importance, size, and type of the multimedia (pg. 10, lines 25-
37 of Aho). The claim language does not limit what “factual
information” can qualify as the QoS parameters. As a result,
using the broadest reasonable interpretation, the Examiner
interprets the information on the size, type, and importance of
the multimedia to be QoS parameters. On pg. 9, line 24-pg. 10,
line 6 of the specification, the Appellant provides a list of
“UMTS QoS attributes”. However, nothing in the claim
language requires the Examiner to interpret “QoS parameters”
as attributes on that list.
(Ans. 22, emphasis added).

37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the
appeal. See also MPEP § 1220, Rev. 8, July 2010.
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We agree with the Examiner’s legal conclusion regarding the broadest
reasonable interpretation of “quality of service parameters.” Moreover,
because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
Although the scope of representative claim 11 is not limited to the list
of exemplary quality of service parameters (attributes) listed in Appellant’s
Specification (pages 9-10), we conclude a broad but reasonable
interpretation of “quality of service parameters” at least covers or includes
the Quality of Service parameters (attributes) described in Appellant’s list in
the Specification. (Id.).2
We particularly note Appellant’s list of attributes includes information
on the size (“Maximum SDU size”), importance (“Traffic handling
priority”), and type (“SDU format information”) of content (Spec. 9-10).
Aho describes the use of size, type, and priority parameters:
The wireless terminal MS makes the decision concerning
retrieval of the multimedia message or the multimedia
components it comprises and selects an appropriate bearer(s)
with the aid of specific data conveyed in the notification
message 30. Typically, this data includes information on the
size and type of the multimedia message or the multimedia
components it comprises. According to the invention, selection
of a bearer may be performed on the basis of only one property

2 “[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments. . . . [C]laims may embrace ‘different subject matter than
is illustrated in the specific embodiments in the specification.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations
omitted).
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of the multimedia message or the multimedia components it
comprises. This property can be for example the type, size or
priority value (importance) of the multimedia message or the
multimedia components it comprises. Thus, selection of a
bearer according to the invention can be made for each
multimedia component of the multimedia message, for
example, merely on the basis of the size of the multimedia
components. Furthermore, certain user configurable rules, the
priority value of the multimedia message and certain properties
of the wireless terminal MS, such as the available memory
space and the terminal's ability to process and display different
types of multimedia component types on its display, can be
taken into consideration in the decision-making process.

(Aho, 11, ll. 16-31, emphasis added).
Therefore, on this record, we are not persuaded the Examiner’s
reading of the contested term “quality of service parameters” on Aho is
overly broad, unreasonable, or inconsistent with the Specification.
Regarding the claim term “recommended quality of service
parameters,” the Examiner notes:
The Appellant alleges the QoS parameters of Aho are
“merely used to determine if the terminal is capable of
receiving and processing [the multimedia message]” (emphasis
removed) (pg. 8 of Appeal Brief). In Aho, the wireless terminal
uses the QoS parameters found in the notification message to
(1) determine whether or not the wireless terminal is able to
retrieve the multimedia and (2) select the most appropriate
bearer for transfer of the multimedia (pg. 11, lines 5-14 of Aho;
Note: a bearer is simply a radio connection between 2 devices).
First, because the wireless terminal does not have to retrieve the
multimedia, setting up a bearer is optional (pg. 13, lines 6-13 of
Aho). An optional bearer only has "recommended QoS
parameters" because the wireless terminal can choose not to
set up a bearer with the stated QoS parameters.
Second, the recommended QoS parameters of Aho are
used to select “the most appropriate bearer” (pg. 11, line 13 of
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Aho). The size, type, and priority of the multimedia are factors
in selecting a bearer (pg. 13, lines 31-37 of Aho). For example,
priority can ensure a bearer with the most transfer capacity is
selected (pg. 15, lines 1-7 of Aho).
(Ans. 23 (alteration in original) (emphasis in original omitted, emphasis
added)).
We agree with and adopt the Examiner’s reasoning with regard to the
broadest reasonable interpretation of the contested “recommended quality of
service parameters.” (Claim 11).
Turning to the Specification for context, Appellant indicates that
Figure 3 and page 11, lines 14-31, support the method step of “retrieving a
set of recommended quality of service parameters.” (App. Br. 3, claim 11).
Appellant’s disclosure describes, “[t]he procedure illustrated in Fig. 3 allows
the service provider to influence the QoS of the bearer service instead of
relying on ‘hard coded’ QoS parameters inside the mobile client terminal.”
(Spec. 11, ll. 33-34 (emphasis added)). We conclude the Examiner’s
interpretation of “recommended quality of service parameters” as including
parameters that make optional or influence the result of the selection of the
bearer is not overly broad, unreasonable, or inconsistent with the Appellant’s
Specification. Therefore, on this record, we are not persuaded that the
Examiner has erred.
Moreover, Appellant’s description of the procedure depicted in Figure
3 includes the express statement: “[h]ow to implement such software code
means in order for it to be able to perform the functions described herein
using common computer languages is well known to the person skilled in the
art and will not be explained in further detail.” (Spec. 12, ll. 19-22; emphasis
added). This statement appears to be an acknowledgement that
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implementing technologies for selecting a bearer as shown in Figure 3 were
well known in the art at the time of Appellant’s’ invention.3 Thus, Appellant
appears to be urging the patentability of the claims on appeal based upon
claimed features that were known to artisans at the time of Appellant’s
invention, as further evidenced by the cited prior art of record relied on by
the Examiner.
Accordingly, on this record, we are not persuaded the Examiner erred.
We sustain the Examiner’s § 102 rejection A of representative claim 11, and
grouped claims 12, 14, 15, 19-22, 24, 25, 29, 30, 32-34, 36, 37, and 41 (not
argued separately) which fall therewith under § 102 rejection A. See
37 C.F.R. § 1.37(c)(1)(vii)(2004).

REJECTIONS B, C, and D under § 103
Appellant contends the remaining dependent claims are patentable
because the cited additional references fail to cure the deficiencies in Aho
(App. Br. 9-10). However, we find no deficiencies regarding Aho for the
reasons discussed above regarding rejection A of claim 11. Therefore, we
sustain the Examiner’s §103 rejections B, C, and D of the remaining
dependent claims for the same reasons discussed supra, regarding claim 11.

3 A statement by an applicant in the specification or made during
prosecution identifying the work of another as “prior art” is an admission
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C.
§ 102. Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354
(Fed. Cir. 2003); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1570 (Fed. Cir. 1988).
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DECISION
We affirm the Examiner’s decision rejecting claims 11-42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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